Patent Eligibility

The test for patentable subject matter under Section 101 lies at the heart of patent system. However, very little guidance is provided in the actual statutory language. It comes as no surprise that the “seemingly’ simple provision of patent eligible subject matter has caused a great deal of confusion among inventors, patent attorneys, district court judges, and even the Justices on the U.S. Supreme Court.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The U.S. Patent and Trademark Office (“USPTO”) has renewed the hopes of applicants looking to patent method of treatment claims. A recent memo from the USPTO (the “Memo”) provides guidance on method of treatment claims, suggesting that when correctly drafted, such claims should generally be considered patent eligible subject matter.

About

Seyfarth’s Life Sciences attorneys have a deep understanding of the biotechnology, chemical, pharmaceutical, and nanotechnology industries. We represent an international clientele of innovators and investors working with world-changing technologies. Our clients range from clinical-stage biotechnology companies and multinational pharmaceutical corporations to chemical and nanotechnology companies as well as start-up companies and venture capital firms.